Ex Parte Breed et alDownload PDFPatent Trial and Appeal BoardNov 4, 201412020684 (P.T.A.B. Nov. 4, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/020,684 01/28/2008 David S. Breed ITI-050 2469 22846 7590 11/04/2014 BRIAN ROFFE, ESQ 8170 McCormick Boulevard, Suite 223 Skokie, IL 60076-2914 EXAMINER TISSOT, ADAM D ART UNIT PAPER NUMBER 3663 MAIL DATE DELIVERY MODE 11/04/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID S. BREED, WENDELL C. JOHNSON, and WILBUR E. DUVALL ____________ Appeal 2012-003990 Application 12/020,684 Technology Center 3600 ____________ Before: SCOTT R. BOALICK, Vice Chief Administrative Patent Judge, and LINDA E. HORNER, MICHAEL C. ASTORINO, WILLIAM A. CAPP, and NEIL T. POWELL, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants, on July 18, 2014, filed a Request for Rehearing (“Request”) in response to the Decision mailed June 4, 2014 (the “Decision”). In the Decision, the Board affirmed the Examiner’s rejection of claim 1 under 35 U.S.C. § 112, second paragraph (now 35 U.S.C. § 112(b)) as indefinite and entered a new ground of rejection of claims 26–45 under 35 U.S.C. § 112(b) as indefinite. We do not modify the Decision. Appeal 2012-003990 Application 12/020,684 2 BACKGROUND AND ISSUE PRESENTED A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)). In the Decision, the Board affirmed the Examiner’s determination that the term “can be,” as it is used in claim 1 is indefinite. Dec. 6. Appellants argue that the Decision overlooked or misapprehended that the prosecution history resolves the alleged indefiniteness of claim 1. Req. 1. In particular, the Request directs our attention to a statement made by Appellants in their Appeal Brief that purportedly constitutes prosecution history that clarifies the meaning of the term “can be.” Req. 3. The question presented in this Request is whether the Board erred in affirming the Examiner’s indefiniteness rejection in view of Appellants’ statements in an Appeal Brief that purportedly creates prosecution history resolving the ambiguity indentified in the Examiner’s indefiniteness rejection. We answer that question in the negative and maintain the original decision to affirm the Examiner’s rejection under 35 U.S.C. § 112(b). ANALYSIS Prior to this Appeal and during prosecution before the Examiner, the Examiner rejected claim 1 as indefinite, stating: Claim 1 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The use of the phrase "can be" is indefinite. It is not clear if Applicant is intending the claim limitations using the phrase "can be" to be optional or that the phrase should be Appeal 2012-003990 Application 12/020,684 3 interpreted as a definite statement (for example, using “are” or simply deleting the phrase; i.e. “roadway conditions from multiple roadways are obtained” and “and directed from the remote facility to other vehicles on the roadway”). Clarification is required. Final Rejection dated March 21, 2011, p. 3. Appellants subsequently filed an after-final amendment. Amendment dated June 21, 2011. In the Amendment, Appellants deleted the phrase “can be” in two places and substituted in lieu thereof the phrase “are optionally.” Id. at 2. In the accompanying Remarks, Appellants represented that: Claim 1 is amended to change the term “can be” to “are optionally” to thereby clarify that the features set forth in this “whereby” clause are optional. Id. at 5. Thereafter, the Examiner mailed an Advisory Action dated July 5, 2011, responding to Appellants’ after-final amendment substituting “are optionally” for “can be,” stating: The request for reconsideration has been considered, but does NOT place the application in condition for allowance because: In the Response to Office action of March 7, 2011, and substantive amendments therein, Examiner did not consider the phrase “optionally”. Instead, in the corresponding Final rejection of March 21, 2011, the claims were made to be definite by substituting “are” for the “can be” limitation. This was done as a means to enable an expedient prosecution. In light of this, the “optionally” amendment will not be entered into the record, as it changes the substantive nature and interpretation of the claim. Accordingly, the claim would need additional search and or consideration. Advisory Action, July 5, 2011, pp. 1–2 (emphasis added). Appeal 2012-003990 Application 12/020,684 4 The instant appeal followed. In view of the Examiner’s decision not to enter the after-final amendment, the case came to us with the phrase “can be” remaining in two places in claim 1. In their Appeal Brief, Appellants made the following argument on which they now rely as constituting prosecution history that renders the claim definite: The Examiner states that the use of the phrase “can be” is indefinite. However, in the Advisory Action dated July 5, 2011, the Examiner indicated that the change to the claim to substitute “are optionally” for “can be” made in the Amendment dated June 21, 2011 changes the substantive nature and interpretation of the claim, and was made to make the claims definite. So, the undersigned respectfully submits that the term “can be” was not considered to be definite and was considered to be optional (or else the Amendment dated June 21, 2011 would not have raised a new issue). That is, if the change to the claim to be definite was considered to raise a new issue, then the Examiner inherently must have considered the features following by the phrases “can be” to be optional, and as such, with the optional features, the claim should not be deemed indefinite under 35 U.S.C. §112, second paragraph. Appellants therefore adopt the Examiner's interpretation of claim 1 as reciting that the features following the “can be” phrases are optional, thereby overcoming the rejection of claim 1 under 35 U.S.C. §112, second paragraph, since the claim is not indefinite for being unclear as to whether these same features are optional or part of a definite statement. Reversal of the rejection is thus respectfully requested. App. Br. 9. We first address Appellants’ argument that prosecution history created on Appeal operates to render claim 1 definite, thus requiring reversal of the Examiner’s rejection. Appellants argue that they made a statement in the Appeal 2012-003990 Application 12/020,684 5 Appeal Brief that purportedly “adopted” the Examiner’s own interpretation of claim 1 as reciting that the features following the “can be” phrases are optional and that this adoption cured the indefiniteness problem. Req. 3, App. Br. 9. However, Appellants’ argument does not accurately reflect the Examiner’s interpretation of claim 1 in the Final Rejection. In essence, what the Examiner actually said was that claim 1 is indefinite because it is susceptible to more than one interpretation. See Ans. 5–6. It is not correct, therefore, for Appellants to state that they “adopted” the Examiner’s position. It is more accurate to state that, during the appeal, Appellants adopted only one of two possible interpretations identified by the Examiner. In essence, Appellants argue that we should have accepted their selection of one of two possible interpretations of “can be” during the Appeal. According to Appellants, by making a choice between two possible interpretations identified by the Examiner during the appeal, Appellants used prosecution history to more clearly define the meaning of the claim, thereby rendering it definite. If we allow Appellants to so choose between the two possible interpretations identified by the Examiner, the Examiner concedes that the claim would thereby be rendered definite. Ans. 6. In the Request, Appellants argue that the Supreme Court’s recent decision in Nautilus v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), requires us to consider prosecution history in analyzing the definiteness of Appellants’ claims. Req. 2. More particularly, however, since the prosecution history that Appellants rely on to render the claim definite took place in Appellants’ briefs on appeal, Appellants essentially argue that Nautilus requires us to consider prosecution history generated by an applicant on appeal as curing a ground of rejection that was otherwise Appeal 2012-003990 Application 12/020,684 6 appropriate at the time it was made by the Examiner. Thus, according to Appellants, even if the Examiner’s rejection was appropriate at the time that it was made, Appellants cured the deficiency in the claim through prosecution history generated in the Appeal Brief, thereby requiring us to reverse the Examiner’s rejection. We agree with the general proposition that prosecution history can provide an important tool for construing patent claims. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (in construing claims, a court should consider the patent’s prosecution history, if it is in evidence). We also agree, that, under certain circumstances, prosecution history may serve as intrinsic evidence for purposes of construing patent claims before the PTO. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). However here, Appellants argue that they can generate prosecution history, for the first time on appeal, that modifies the scope or meaning of a claim so as to require reversal of an Examiner’s rejection that was appropriate at the time that it was made. We disagree with Appellants that Nautilus requires us to allow Appellants to effectively amend their claims through disclaimer by generating prosecution history to redefine their claims on appeal. The PTO is under no obligation to accept a claim construction offered as a prosecution history disclaimer, which generally only binds the patent applicant or patent owner. See Tempo Lighting, at 978. Furthermore, we disagree with Appellants’ characterization that the Examiner treated “can be” as meaning “are optionally” to render the claims definite for purposes of performing a prior art examination. Contrary to Appellants’ characterization of the record before the Examiner, the Appeal 2012-003990 Application 12/020,684 7 Examiner never substituted “are optionally” for “can be” to render the claims definite for purposes of the Final Rejection. What the Examiner actually said, both in the Advisory Action and the Answer is that: (1) for purposes of the prior art analysis in the Final Rejection, the Examiner treated “can be” as “are,” not “are optionally;” and (2) changing the phrase “can be” to “are optionally,” while perhaps rendering the claim definite, would have changed the substantive scope of the claim requiring a further prior art search resulting in different grounds of rejection. Examiner originally interpreted the phrase “can be” to be indefinite in the Final rejection of March 21, 2011. To expedite prosecution, examiner assumed that the applicant intended it to be an active, positive limitation instead of an optional limitation. Thus, the examiner substituted “are” in place of the “can be” phrase (i.e., " ... multiple roadways are obtained ... " instead of " ... multiple roadways can be obtained ... "). However, the examiner's assumption was incorrect, and as indicated in the Amendment After Final of June 21, 2011 (which attempted to change “can be” to “optionally”), applicant did intend on making the limitation at issue an optional limitation. This amendment was not entered into the record based on reasoning from the After Final Advisory Action of July 5, 2011, because the proposed amendment would have changed the original substantive interpretation of the claim and resulted in different grounds of rejection. Changing the phrase “can be” to “optionally” is viewed as being definite and would have been entered but for examiner's interpretation based on “are” and it being an After Final amendment. Answer 5–6. Thus, the Examiner treated “can be” as “are” for purposes of applying the prior art in the Final Rejection. The Examiner did not treat “can be” as “are optionally” for purposes of the Final Rejection. Appellants’ Appeal 2012-003990 Application 12/020,684 8 representation and argument to the contrary lacks support in the underlying record. Finally, Appellants’ argument confuses the roles of patent prosecution before the Examiner and the subsequent appeal from an adverse decision by an Examiner to the Board. When an application is before the Examiner, an applicant has an opportunity to amend the claims and clarify the meaning of claim terms. During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art. The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process. In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989) (citation omitted); see also In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application). However, once an Examiner enters a final rejection, the applicant’s ability to amend claims is limited. See 37 C.F.R. § 41.33. Once an application comes before the Board on appeal, our function is to review the correctness of the Examiner’s rejection. We do not undertake to examine the patentability of claim amendments that were not entered by the Examiner. Id. Appeal 2012-003990 Application 12/020,684 9 If we were to accept Appellants’ position that they should be allowed to rely on prosecution history in their Appeal Brief to redefine the meaning of claim 1, we would effectively be entering the claim amendment that the Examiner declined to enter in the Advisory Action of July 5, 2011. The Examiner finally rejected claim 1 on two, alternative grounds. One ground was indefiniteness under Section 112, second paragraph. Ans. 5. The other, alternative ground was a prior art rejection for obviousness under Section 103. Id. If we were to accept Appellants’ prosecution history position and modify the meaning of claim 1 so that “can be” means “optionally are,” we would then have to review the Examiner’s Section 103 prior art rejection using a claim scope that differed from the claim scope used by the Examiner in searching, examining the claim, and making the rejection. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art. Zletz, 893 F.2d at 321–22 (emphasis added). In the Advisory Action, the Examiner advised Appellants that entry of an amendment substituting “optionally are” for “can be” would change the substantive nature of the claim, requiring an additional prior art search. the “optionally” amendment will not be entered into the record, as it changes the substantive nature and interpretation of the claim. Accordingly, the claim would need additional search and or consideration. Advisory Action, July 5, 2011, pp. 1–2. Thus, by allowing Appellants to effectively amend the substantive scope of their claims through disclaimer by redefining “can be” to mean “optionally are,” instead of by amending the claims before the Examiner to Appeal 2012-003990 Application 12/020,684 10 substitute “optionally are” for “can be,” we would be reviewing the Examiner’s prior art rejection using a different substantive claim scope than that used by the Examiner. We decline to take this approach. In view of the foregoing, we reject Appellants’ contention that prosecution history generated in the Appeal Brief requires reversal of the Examiner’s indefiniteness rejection. DECISION Appellants’ Request has been granted to the extent that we have reconsidered the Decision in light of the arguments in the Request, but is denied with respect to our making any modification to the Decision. Upon reconsideration, the rejection of claims 1 and 26–45 remains affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). DENIED Klh Copy with citationCopy as parenthetical citation